- Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00792 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing institution decisions and leaving the § 315(b) contention open for post-institution submissions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00791 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“deadline set forth in 35 U.S.C. § 314(b). Req. Reh’g 10 n.2. Patent Owner contends that “[t]he deadline under 35 U.S.C. § 314(b) should not be an obstacle because Congress has recognized that there should be some flexibility with respect to deadlines.” Id. (citing 35 U.S.C. § 316(a)(11)). Section 316(a)(11) provides up to six additional months to issue a final written decision when good cause is shown. Section 316(a)(11) does not, however, address extending the three-month time period after a preliminary response is filed to issue an institution decision. That three-month time period is governed by § 314(b), and Patent Owner fails to offer any support for its argument that we can extend the deadline under § 314(b). Accordingly, we are unaware of any statutory authority by which we may extend the deadline to determine whether to institute an inter partes review under § 314(b), even with a showing of good cause.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Owner”) filed a Request for Rehearing and Reconsideration (“Rehearing Request” or “Req. Reh’g”)2 of our Decision instituting inter partes review (“Decision” or “Dec.”).3 In instituting the inter partes reviews, we determined that Petitioner established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of each challenged patent. See, e.g., Dec. 2, 22.” slip op. at 2
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00794 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b).” slip op. at 6
NonePatents in suitUS 6,742,021 - Microsoft Corporation v. Ipa Technologies Inc.Rehearing deniedPTAB · Nov 8, 2018 · IPR2018-00734 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely instituting review; Patent Owner may raise its § 315(b) contention in post-institution submissions.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot reached
“than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b).” slip op. at 7
NonePatents in suitUS 6,523,061 - Fredman Bros. Furniture Company, Inc. v. Bedgear, LLCAll claims unpatentablePTAB · Jun 12, 2018 · IPR2017-00351 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–10, 12–15, and 17–20 are unpatentable: Rasmussen anticipates the challenged claims, and Rasmussen combined with Doak, Mason, or Burton renders claims 5, 6, 12, and 19 obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner’s statement that the claim language “does not address (i.e., require or restrict) air entering through a structure other than a panel (e.g., a gusset) nor does it address any such air exiting the pillow in a particular manner (e.g., through a panel, gusset, or other structure).” See PO Resp. 47. The claim language requires “at least some air which enters through the panels” exits through the gusset alone or in combination with another structure. See id. The portions of the specification cited by Patent Owner support its above-quoted statement because the cited portions describe that the pillow allows lateral ventilation, gusset 20 provides venting, gusset 20 permits air exchange, and the panels can be made of open cell construction. See PO Resp. 48–49; Ex. 1047, 1:37–40, 2:12–15, 4:34–36, 4:56–58. Further interpretation is not required for determining whether Petitioner shows by a preponderance of the evidence the unpatentability of claim 1. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in controversy and only to the extent necessary to resolve the controversy).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The specification of the ’883 patent states that an “‘open cell construction’ as used herein refers to a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” Ex. 1047, 1:44–47. Based on the full record, we agree with parties that “open cell construction” is defined in the specification, and we interpret it in accordance with that definition to mean “a construction having overall porosity greater than the inherent porosity of the constituent material or inherently having high porosity.” See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the full record, we concur with the parties that an express interpretation for “gusset” is not necessary for determining whether Petitioner has demonstrated by a preponderance of the evidence that the challenge claims are unpatentable. See Vivid Techs., 200 F.3d at 803. We also determine that express interpretation of any other claim term is not necessary. See id.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“Petitioner also argues that the claims of the ’883 patent are not entitled to a priority date before June 22, 2012. Pet. 24. Petitioner argues that Rasmussen (Ex. 1006) is § 102(b) prior art, if the challenged claims are entitled only to a priority date of June 22, 2012. Petitioner alternatively argues that a provisional application (Ex. 1007, to which Rasmussen claims priority, see Ex. 1006, [30]) is § 102(e) prior art, if the challenged claims are entitled to the earlier priority date of June 22, 2011. Pet. 24. Petitioner, thus, provides parallel citations to Rasmussen and the provisional application, which Petitioner asserts is identical to Rasmussen. Pet. 24 n.1; Ex. 1057 (comparison of Rasmussen and its provisional). As discussed below, the full record persuades us that Petitioner has proven by a preponderance of the evidence that claims 1–4, 7–10, 13–15, 17, 18, and 20 are anticipated by Rasmussen under 35 U.S.C. § 102(b) or § 102(e).” slip op. at 16
Patent outcomesUS 9,015,883 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,015,883 - Askeladden LLC v. Purple Leaf, LLCAll claims unpatentablePTAB · Feb 13, 2018 · IPR2016-01721 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–11 are unpatentable: claims 10–11 anticipated by Sirbu; claims 1–9 obvious over the specified combinations of Sirbu with Hughes and additional references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 14, 1999, would have had either: “(i) a Bachelor-of-Science degree in Computer Science, Electrical Engineering, or Computer Engineering, or equivalent, and two (2) years of prior experience in software development, or (ii) a post-graduate degree in Computer Science, Electrical Engineering, or Computer Engineering, or equivalent.” Pet. 6 (citing Ex. 1502 ¶¶ 22–26). Because it is consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). There is a presumption that claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Nonetheless, if the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Another exception to the general rule that claims are given their ordinary and customary meaning is “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1313 (Fed. Cir. 2013) (quoting Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Although Petitioner proposes that we construe the term “receipt” (Pet. 6), we determine that no express construction is necessary for purposes of this Decision and decline to expressly construe the term. See Vivid Techs., 200 F.3d at 803 (only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Anticipation by Sirbu A prior art reference anticipates a patent claim if it “discloses each and every element of the claimed invention arranged or combined in the same way as in the claim.” Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1342–43 (Fed. Cir. 2018) (internal quotation and citation omitted). Petitioner contends that Sirbu discloses each and every element of claims 10 and 11. Pet. 6–12.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Additionally, Petitioner asserts: One of ordinary skill in the art plainly would have recognized to include built-in cellular telephone functionality in a customer terminal for performing payment transactions, as taught in Hughes, in the customer computer 10 of Sirbu, as doing so would “provide[] portability for the terminal” (Ex. 1506, 11:1–4) by eliminating the necessity of a wired terminal connection. Indeed, Hughes recognizes that by including built-in cellular telephone functionality, the terminal becomes “more portable than” an alternative without such functionality (Ex. 1506, 10:64–67). One of ordinary skill in the art would plainly have recognized the benefits of including cellular connectivity in Sirbu’s customer computer, as doing so would have permitted the user to perform Sirbu’s purchase transactions without being tethered to a wired data connection. Pet. 13 (alteration by Petitioner) (citing Ex. 1502 ¶ 86). We have reviewed Petitioner’s arguments and evidence, and we find that a preponderance of the evidence supports Petitioner’s arguments. We hereby adopt Petitioner’s position on the facts as our own, including Petitioner’s citations to the evidence of record as reflected in pages 12–20 of the Petition. Accordingly, Petitioner has demonstrated by a preponderance of the evidence that the combination of Sirbu and Hughes would have rendered the subject matter of claims 1, 3, and 6–9 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 10
Patent outcomesUS 8,527,407 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,527,407 - PTAB · Jan 3, 2018 · IPR2017-01205 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied rehearing in five proceedings, upholding denial of institution because the petitions did not sufficiently support the asserted obviousness challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
§ 103 obviousnessPatents in suitUS 9,561,314 - PTAB · Dec 12, 2017 · IPR2017-01027 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Petitioner's rehearing requests, leaving in place the denial of institution because the petitions did not sufficiently support the asserted challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting evidence presented in the Petition and determined it insufficient to institute trial. See, e.g., Dec. 10 (“Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein.”). We are not persuaded that we abused our discretion in reaching that determination.9 Disagreeing with our Decision is not, by itself, an appropriate basis for rehearing. 8 Even if Aboul-Hosn’s statement was intended only to contrast Figure 23 with Figure 24, the Petition remains deficient for failing to establish sufficiently that Figure 23 is part of the Figure 1–13 embodiment or provide a sufficient rationale to modify the embodiments disclosed in Aboul-Hosn. See Dec. 9–10. 9 Petitioner includes additional argument in its Request directed to rationale for the combination of Aboul-Hosn’s teachings from Figures 1–13 with those from Figure 23. In the Petition, Petitioner did not propose sufficient rationale for combining the various teachings from Aboul-Hosn with one another. See Dec. 10.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,888,728 - Department Of Justice v. Discovery Patents, LLCSome claims unpatentablePTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision
Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11
Patent outcomesUS 7,323,980 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,323,980 - Apple Inc. v. Saint Lawrence Communications, LLCInstitution deniedPTAB · Oct 25, 2017 · IPR2017-01244 · APJ Daniel N Fishman · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 1–21 and 29–42 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For at least the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that it would prevail in showing any of claims 1, 8, 15, 29, and 36 are unpatentable as obvious over the proposed combination of Salami and Kroon.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“encoding device of, for example, claim 1. However, we agree with Patent Owner that Salami does not disclose that the preemphasized input speech signal is used as an input to a perceptual weighting filter as recited in claim 1. See PO Resp. 35–37. Specifically, claim 1 specifies both the synthesis filter calculator and the perceptual weighting filter are responsive to the preemphasized signal generated by the preemphasis filter, which is, in turn, responsive to the input wideband speech signal, and further specifies that the perceptual weighting filter is also responsive to the coefficients generated by the synthesis filter calculator. In other words, the claim requires an arrangement of the various elements of an encoder in which the output of the preemphasis filter (the preemphasized signal) is applied to the synthesis filter calculator and applied to the perceptual weighting filter, and the coefficients generated by the synthesis filter calculator are applied to the perceptual weighting filter. An excerpt of Figure 1 of the ’524 patent, reproduced below, shows a block diagram of relevant portions of such an encoder arrangement. The above excerpt of Figure 1 of the ’524 patent depicts preemphasis filter 103, coupled to receive wideband speech signals (“Sp”) and configured to generate preemphasized speech signal (“S”). Ex. 1001, 7:64–8:18. The output of preemphasis filter 103 (“S”) is applied to LP analysis quantization and interpolation calculator 104 and perceptual weighting filter 105. Id. at 8:19–9:45. Petitioner directs us to no disclosure in Salami of such an arrangement of filters in an encoding device.” slip op. at 17
- BurdenInstitution denied
“Ex. 1008, 23. We discern no teaching or suggestion in this text of Salami that the preemphasized signal is used on a perceptual weighting filter. We find no support in the cited portions of Salami for Petitioner’s assertion that the preemphasized signal is first applied to LP analysis and then the same preemphasized signal is perceptually weighted (i.e., applied to a perceptually weighted filter). Petitioner’s argument in the Petition does not explain specifically how the cited text teaches the identified claim limitations and, thus, amounts to little more than an unsupported conclusory remark. Dr. Cohen merely repeats the same argument without providing any further explanation. Ex. 1003, 65 (the portion of the claim chart of paragraph 114 for this element of claim 1).” slip op. at 19
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,807,524
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.